TTAB Posts December 2023 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled three oral hearings for the month of December 2023, all held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

December 5, 2023 - 2 PM: Omegle.com, LLC v. Bad Kittty's Dad, LDA, Oppositions Nos. 91249511 and Cancellation No. 92072561 [Section 2(d) challenges to registration of the mark OMETV for, inter alia, internet video chat rooms, in view of opposer's registered mark OMEGLE for online chat services.]

December 12, 2023 - 2 PM: In re Cuts Clothing Inc Serial No. 90880357 [Section 2(d) refusal to register VERSAKNIT for "textile fabrics for the manufacture of clothing" in view of the registered marks VERSAFLEX for “Non-woven textile fabrics” and VERSATECH for "Woven fabric for use in the manufacture of apparel and other related uses.”]

December 13, 2023 - 1 PM: Tiarra Hamlett and Michael Hamlett Jr. v. Bronx Native composed of Giancarlos Martinez, Roselyn Grullon and Amaurys Grullon, Cancellation No. 92077944 [Petition for cancellation of a registration for the mark BRONX NATIVE for various clothing items [BRONX disclaimed], in view of the registered mark THE BRONX BRAND for overlapping clothing items [BRAND disclaimed]].

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TTABlog comment: See anything interesting? Predictions?/span>

Text Copyright John L. Welch 2023.

CAFC Sends Back TTAB's "GET ORDAINED" Decision: Board Ignored Its Own Policy Regarding Waiver of Unargued Claims

Well, this is a strange one. The CAFC reversed the Board's decision sustaining an opposition to registration of GET ORDAINED for retail store services and ecclesiastical services, remanding the case for further consideration. The Board found the phrase so commonly used that consumers will not perceive it as a source indicator pointing uniquely to the applicant. Alternatively, the Board found the phrase to be merely descriptive and lacking secondary meaning. [TTABlogged here]. However, Opposer AMM had made no argument regarding applicant's retail store services, and so the court sent the case back to the TTAB to consider why the Board did not apply its usual waiver-of-argument policy with respect to those services. Universal Life Church Monastery Storehouse v. American Marriage Ministries, Appeal No. 2022-1744 (Fed. Cir. November 22, 2023) [not precedential].

The CAFC was unable to square the Board's decision with the usual waiver practice. Despite the failure of AMM to refer to its Class 35-specific claims in its briefs, the Board went ahead and adjudicated those claims without explaining why it did not consider them waived.

In sum, we determine that (1) the Board has an established practice of considering unargued claims to be waived, (2) AMM did not refer to or argue any Class 35- specific claims in its trial briefs, and (3) the Board considered the Class 35-specific services but did not explain why it did not consider these claims to be waived in view of its established waiver practice. We accordingly hold that the Board acted arbitrarily and capriciously by departing from its established practice without providing a reasoned explanation for the departure.5 For that reason, we vacate the Board’s decision as to ULC Monastery’s Class 35-specific services.

The CAFC did not decide whether the Board may have a basis "for deeming AMM’s opposition to ULC Monastery’s Class 35 application not to be waived, or for excusing any waiver." If the Board on remand decides to "reconsider" ULC Monastery’s retail store services, the Board should ensure that its analysis has a basis in the record. 

The Board’s decision laid out a summary of the relied-on evidence of record. Opposition Decision, 2022 WL 500926, at *4–7. While this evidence relates to ULC Monastery’s ecclesiastical services, the Board did not explain its pertinence to ULC Monastery’s online retail store services. Moreover, the Board’s findings specific to online retail store services lack any citations to the record. Id. at *7, 11, 13. On remand, for its mere descriptiveness and failure-to-function analyses with respect to ULC Monastery’s online retail store services, the Board should “assure that the requisite findings are made, based on evidence of record” and “explain the reasoning by which the findings are deemed to support” the Board’s decision. 

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TTABlogger comment: It appears that the parties will agree to dismiss the claims regarding the retail store services. BTW, the CAFC says "forfeiture" would be a more appropriate term than "waiver," since the latter is "the intentional relinquishment or abandment of a known right."

Text Copyright John L. Welch 2023.

Precedential No. 34: TTAB Dismisses Monster Energy's Section 2(d) Claim On Summary Judgment Due to Dissimilarity of Design Marks

Deeming the first DuPont factor to be dispositive, the Board granted Applicant Critical Role, LLC's motion for summary judgment, dismissing Opposer's Monster Energy's Section 2(d) claim. Monster alleged a likelihood of confusion between its registered "Claw" design mark for various goods and services, and applicant's "Circled MV" design mark for goods and services in eight classes. Monster's unchallenged dilution claim remains pending, since dilution may exist "regardless of the presence or absence of actual or likely confusion.” 15 U.S.C. Section 1043(c)(1). Monster Energy Company v. Critical Role, LLC, 2023 USPQ2d 1382 (TTAB 2023) [precedential].

The Board characterized Monster's mark as "three downward jagged and crooked lines of approximately equal size that resemble claw scratches and are connected at right angles." Critical Role's mark (which it described as the "stylized letters ‘V’ and ‘M’ oriented vertically within a circle") "consists of smooth lines, with two lines curving down to follow the shape of a background circle, two shorter lines which are diagonal and meet in the middle of the design, and two additional, diagonal lines which appear above the other lines and extend from the background circle to meet in the middle of the design."

Unlike Applicant’s mark, there is nothing circular in Opposer’s Claw Mark, and Applicant’s mark does not resemble claw scratches. When the marks are perceived in their entireties, these clear visual distinctions between the marks create very different commercial impressions. * * * The letter M as presented in the marks is stylized with such different shapes and types of lines that the marks as a whole do not resemble one another. With marks this different, confusion is unlikely.

And so, the Board granted the motion for summary judgment as to Monster's Section 2(d) claim.

Critical Role did not move for summary judgment as to Monster's Section 43(c) dilution-by-blurring claim but it maintained that the ruling on the Section 2(d) claim rendered the dilution claim moot. Not so, said the Board, pointing to Section 43(c)(1), which states that a claim for dilution is available "regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury."

The Board therefore resumed the proceeding with respect to the dilution claim.

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TTABlogger comment: Since the marks are not similar for Section 2(d) purposes, how can they be similar for Section 43(c) purposes? The standard is the same. See Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018 (TTAB 2011). It seems that summary judgment on the dilution claim is in the offing.

Text Copyright John L. Welch 2023.

Precedential No. 33: TTAB Reverses Failure-to-Function Refusal of "FOLLOW THE LEADER" for Credit Card and Travel Services

The Board rendered a rare reversal of a failure-to-function refusal, finding the USPTO's evidence insufficient to establish that the phrase FOLLOW THE LEADER is incapable of serving as a source indicator for credit card incentive program, credit card financial, travel information, ticket reservation, travel advisory, salon and spa reservation, and concierge services. Although FOLLOW THE LEADER is in common use in various contexts, the phrase may convey different meanings in those contexts, and it does not have a commonly understood meaning applicable to the applicant’s services. In re Black Card LLC, 2023 USPQ2d 1376 (TTAB 2023) [precedential] (Opinion by Judge Jonathan Hudis).

Sections 1, 2, 3, and 45 of the Lanham Act provide the statutory basis for a refusal to register subject matter that does not function as a trademark or service mark. A threshold question in evaluating the registrability of a trademark or service mark is whether the proposed mark meets the source indication requirement. As the Supreme Court has recognized, “the lead criterion for registration is that the mark in fact serve as a ‘trademark’ to identify and distinguish goods [or services].” Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 143 S. Ct. 1578, 2023 USPQ2d 677, at *5 (2023) (cleaned up).

Of course, "[t]he critical inquiry in determining whether a proposed mark functions as a … [service mark] is how the relevant public perceives the term sought to be registered.” Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *25 (TTAB 2021). The evidence may show that the proposed mark “is a common term or phrase that consumers of the … services identified in the application are accustomed to seeing used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments.” In re Brunetti, 2022 USPQ2d 764, at *12. “The more commonly a phrase is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a … [service mark].” Id. (citing In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)).

On the other hand, not every common term or phrase warrants refusal on failure to function grounds. The refusal is strictly dependent on the evidence presented to show how consumers would perceive the proposed mark. The totality of the evidence must be sufficient to show that the phrase sought to be registered is used in such a way that it cannot be attributed to a single source of the goods or services at issue. 

To determine whether a phrase sought to be registered functions as a source indicator, the Board looks to evidence showing how the phrase is used in the marketplace by the applicant and by others.

The Examining Attorney argued that FOLLOW THE LEADER is "commonly used to encourage customers to follow the leader in a particular field and conveys that the applicant is the leader in the services listed in the application and should be followed because of this alleged fact .…" The evidence comprised a dictionary entry, articles, blogs, company websites, consumers goods, and other materials showing use of the phrase in connection with children's games, business decision- making, guided travel tours, governmental and political leadership, personal decision-making, and artwork on consumer items.

Applicant Black Card maintained the proposed mark provides no generalized informational message, and it asserted that there is no blanket rule that commonly used phrases are not registrable.

The Board observed that "[t]he record need not necessarily include evidence of third-party use in connection with the specific services at issue for the evidence to support the failure to function refusal." However, the evidence must demonstrate that the proposed mark "would convey a generally understood sentiment or meaning to the consumers of [Black Card's] services such that they would not perceive it as signifying the source of the services."

The Board found that the phrase FOLLOW THE LEADER may convey different meanings depending on context. "For example, FOLLOW THE LEADER can refer to business decisions made to align with the industry leader, a manager’s impact on employees or the business, politicians’ or government workers’ often negatively portrayed allegiance or compliance with a political figure or political leadership, tour groups being led by a tour guide, or personal decision-making, whether based on following a role model or following the crowd."

Thus, the phrase as issue here is unlike the phrase INVESTING IN AMERICAN JOBS in In re Wal-Mart Stores, 129 USPQ2d at 1153-56, where the evidence of Wal-Mart's own use and of common use of across different industries and manufacturing contexts "informed consumer perception of the phrase for the applicant’s retail store services and promotional services for goods made or assembled by American workers."

Concluding that the Office's evidence fell short, the Board reversed the refusal to register:

The evidence as a whole does not demonstrate use for services or in contexts from which we may reasonably infer that FOLLOW THE LEADER has a commonly understood meaning applicable to Applicant’s services that would render it incapable of being perceived as a source indicator for those services.

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TTABlogger comment: What if the involved goods were t-shirts?

Text Copyright John L. Welch 2023.

CAFC Affirms TTAB's Dismissal of RANGER TREK Opposition: Not Confusable With TREK for Non-Bicycle Goods

The CAFC upheld the Board's dismissal [TTABlogged here] of Trek Bicycle's Section 2(d) opposition to registration of the mark RANGER TREK , in standard character and design form, for bags and clothing. The Board found confusion unlikely with the allegedly famous common law and registered mark TREK for bags and bicycling apparel. The appellate court determined that substantial evidence supported the Board's factual findings and the Board did not err in concluding that "the difference between the [parties'] marks [were] sufficient to avoid likely confusion." Trek Bicycle Corporation v. Christina Isaacs, 2023 USPQ2d 1356 (Fed. Cir. 2023) [not precedential].

Trek challenged the Board's factual findings as to the dissimilarity of the marks, the lack of fame and the strength of the TREK mark, and the Board's consideration of the prosecution history of one of Trek's trademark applications. Trek also challenged the Board's weighing of the DuPont factors.

As to the first DuPont factor, Trek contended, inter alia, that TREK is the dominant portion of applicant's marks, but the court concluded that the Board "reasonably found that 'RANGER' was more dominant" because RANGER is the first word in the mark and "reasonably concluded that the parties' marks differed in their overall commercial impression because 'TREK by itself simply references a journey or hike' whereas 'RANGER TREK evokes . . . a specific type of person with a mission on a RANGER TREK.'"

As to the fame of the TREK mark, the Board properly discounted Trek's raw sales and advertising numbers as insufficient. Trek argued that it had provided contextual evidence as well, but the court pointed out that Trek did not make that argument before the Board. In any case, as the Board pointed out, Trek's evidence was "not broken down by product and [did] not appear to be for only clothing and bags."

As to conceptual strength, the Board "reasonably relied on" certain dictionary definitions and third-party registrations to show that TREK is somewhat conceptually weak and suggestive of the involved goods. In any case, any error by the Board on this issue was harmless because "it appears that the Board concluded there was no likelihood of confusion without accounting for this finding."

With regard the Board's consideration of the prosecution history of the TREK mark, wherein Trek argued that its mark was not confusable with five other marks containing the word TREK, the Board found that the RANGER TREK mark could co-exist with TREK as well. The CAFC found no error in the Board's interpretation of the prosecution history. Again, if there were an error, it was harmless because the Board stated that it would not change the result.

Finally, as to the weighing of the DuPont factors, the court disagreed with Trek's contention that the Board gave too much weight to the dissimilarity of the marks, "especially given the Board's findings that the marks noticeably differed in appearance, sound, connotation, and commercial impression."

And so, the CAFC affirmed the Board's decision.

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TTABlogger comment: It took nearly seven years from the commencement of the oppostion to this CAFC affirmance. Quite a trek!

Text Copyright John L. Welch 2023.

Recommended Reading: "Welcome To The Land Of Trademark Cancellation -- Where Not All Fraud Is Created Equal"

Janelle Barbier, Editor-in-Chief of the Santa Clara High Tech Law Journal, has written an interesting and informative article on the CAFC's recent ruling in Great Concepts, LLC v. Chutter, Inc. [TTABlogged here], in which a divided court panel reversed the TTAB's finding of fraud because "a Section 14 cancellation proceeding is not available as a remedy for a fraudulent Section 15 incontestability declaration." A .pdf of the article is available here.

ABSTRACT

The intellectual property community is buzzing about a recent decision by the U.S. Court of Appeals for the Federal Circuit handing down a ruling on trademark cancellation under the Lanham Act. A divided panel grappled with whether the Agency had authority to cancel a trademark registration as a punishment for filing a false declaration. The majority held that the Agency was precluded from canceling the registration as a remedy for fraud unrelated to the issuance or maintenance of that mark. However, the dissent took aim at the majority’s reasoning, making a compelling argument that green- lighting any type of fraud harms the general public. Ultimately, the decision upended Agency precedent––of nearly fifty years–– presumably because stare decisis is no shield for ultra vires agency action. As such, this outcome is an important stepping stone in the ever-changing landscape of the reviewability of agency decisions.

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TTABlogger comment: Preferred citation: Barbier, Janelle, WELCOME TO THE LAND OF TRADEMARK CANCELLATION––WHERE NOT ALL FRAUD IS CREATED EQUAL, 39 SANTA CLARA HIGH TECH. L.J. 521 (2023).

Text Copyright John L. Welch 2023.

Precedential No. 32: No Preclusive Effect in Cancellation Proceeding if Challenged Registration Survives Reexamination or Expungement

In a rather straightforward ruling, the Board held that "the termination of a reexamination or expungement proceeding in favor of a registrant cannot be the basis for the registrant’s assertion of claim or issue preclusion in a proceeding before the Board to cancel that registration." The Board therefore denied respondents' motion for judgment and resumed the cancellation proceeding. Common Sense Press Inc. d/b/a Pocket Jacks Comics v. Ethan Van Sciver and Antonio J. Malpica, 2023 USPQ2d 601 (TTAB 2023) [precedential].

In October 2020, Common Sense petitioned to cancel a registration for the mark COMICS GATE for "comics," claiming nonuse, abandonment, and fraud. In March 2023, Common Sense filed a petition to the Director under Section 1066b of the Trademark Act, requesting reexamination of the challenged registration, and at the same time moving to suspend the cancellation proceeding. 

The USPTO instituted the reexamination proceeding, informing respondents that, in order to avoid cancellation, they must submit evidence sufficient to "establish use of the mark for [comics] as of the deadline for filing a statement of use pursuant to Trademark Act Section 1(d), which is August 13, 2020."

The reexamination proceeding was terminated on January 6, 2023, the notice of termination stating that:

Upon review of the evidence of record, the USPTO determined that registrant has demonstrated use of the mark in commerce for all goods, subject to the proceeding. 37 C.F.R. § 2.93(c)(3)(i).

The evidence and arguments provided by the registrant demonstrates valid use of the relevant goods [use of the mark, not use of the goods? - ed.] in interstate commerce. Registrant has also established that the relevant goods were provided through trade channels that directly affect interstate commerce during the period of time relevant to this proceeding.

Accordingly, no change is required to the registration, and the proceeding is terminated. 37 C.F.R. § 2.94.

A person who requests institution of a reexamination [no use as of a certain date] or an expungement [no use ever] proceeding must submit "all documentary evidence supporting a prima facie case of nonuse of the mark in commerce and an itemized index of such evidence.” 37 C.F.R. § 2.91(c)(9). If the proceeding is instituted, the requestor has no further involvement, the matter proceeds on an ex parte basis (15 U.S.C.1066a(d); 1066b(e)), and the registrant may rebut the prima facie case of nonuse (15 U.S.C. 1066a(e), (f); 1066b(f)). If the registrant successfully rebuts the evidence and complies with all outstanding requirements, the proceeding is terminated with no change to the registration. 15 U.S.C. §§ 1066a(g), 1066b(g).

The Board began with a review of the statute and the Rules. It pointed out, although the Trademark Act contains explicit estoppel provisions that bar the filing of future expungement or reexamination proceedings as to the identical goods or services once a proceeding of the same kind has been instituted (5 U.S.C. §§ 1066a(j), 1066b(j); accord 37 C.F.R. § 2.92(d)(1) and (2)), neither the statute nor the regulations set forth a limitation on any party’s ability to petition to cancel a registration just because it is or has been the subject of a reexamination or expungement proceeding. See generally 15 U.S.C. §§ 1066a, 1066b; 37 C.F.R. §§ 2.91-2.94. Likewise, the Trademark Rules provide that “termination of an expungement or reexamination proceeding in favor of the registrant does not bar future nonuse cancellation actions under [Trademark Rule] § 2.111 with respect to the registration.”

Moreover, the statute provides that the decision to institute (or not) “shall not prejudice any party’s right to raise any issue and rely on any evidence in any other proceeding” except as provided in sections 1066a(j) and 1066b(j). 15 U.S.C. §§ 1066a(c)(3), 1066b(d)(3).

Apart from the statutory language, the Board observed that, since reexamination and expungement proceedings are ex parte proceedings, "they have no preclusive effect against a petitioner who seeks to cancel that same registration through a cancellation proceeding – even if that petitioner also submitted the petition requesting institution of a reexamination or expungement proceeding. See Blonder--Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 329, 169 USPQ 513, 519 (1971) ("litigants ... who never appeared in a prior action [ ] may not be collaterally estopped without litigating the issue....)."

Further, inasmuch as a person who files a petition requesting institution of a reexamination or expungement proceeding is not a party to that ex parte proceeding, he or she has no right to appeal the Director’s decision in that proceeding. As we recently stated, “[i]f a party cannot appeal the outcome of an earlier proceeding, then the second action is not barred under either [claim or issue] preclusion.” Valvoline Licensing & Intellectual Prop. LLC v. Sunpoint Int’l. Grp. USA Corp., 2021 USPQ2d 785, at *7 (TTAB 2021).

On January 9, 2023, respondents filed a two-page "Notice of Termination of Re-examination and Motion for Judgment," arguing that issue preclusion should be applied with regard to Petitioner Common Sense's nonuse claim. The Board, finding no basis for claim or issue preclusion, denied the motion for judgment and resumed the cancellation proceeding.

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TTABlogger comment: Difficult to see how respondents expected to succeed on this motion.

Text Copyright John L. Welch 2023.

TTAB Orders Cancellation of Registration for Configuration of Glass-Breaking Device on the Ground of Section 2(e)(5) Functionality

In a highly detailed and instructive opinion, the Board granted a petition for cancellation of a registration for the product configuration shown below, for a "spring-loaded glass-breaking device," on the ground of de jure functionality under Section 2(e)(5). The parties proceeded under the Accelerated Case Resolution (ACR) regime, waiving pre-trial disclosures and trial and submitting briefs accompanied by evidence in the form of declarations or affidavits. Trevari Media, LLC v. Laurent Colasse, Cancellation No. 92078038 (November 14, 2023) [not precedential[ (Opinion by Judge Jonathan Hudis).

The Board looked to the factors set forth in In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982), in evaluating utilitarian functionality: (1) the existence of a utility patent that discloses the utilitarian advantages of the registered subject matter; (2) advertising by the registrant that touts the utilitarian advantages of the subject matter; (3) facts pertaining to the availability of alternative designs; and (4) facts pertaining to whether the subject matter results.

Because respondent's product (as described in the application) includes a seat-belt cutting blade, the Board referred to the product as a "GLASS-BREAKING/SEAT-BELT CUTTING Device." The purpose of the device is to help an individual escape from a vehicle in an emergency.

The Board found that all of the functional features of the device are depicted, discussed, and claimed in a European patent. The Board noted that the fact that this patent was issued in Europe has no effect on the Section 2(e)(5) analysis. See Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1478 (TTAB 2017). Since a prior patent has "vital significance in resolving the trade dress claim," respondent "must carry the heavy burden of showing that the feature[s of the device are] … not functional, for instance by showing that … [they are] merely … ornamental, incidental, or arbitrary aspect[s] of the device[.]" The Board, after a thorough review of the evidence and testimony regarding the structure and function, with many annotated illustrations, concluded that Respondent failed to meet that burden.

With regard to registrant's advertising, the Board found that "[n]early all of the graphical and textual matter on Respondent’s product packaging . . . pertains to the functional operations of the device: a seat belt cutter in an elongated and winged configuration with a window breaker in a stepped or ridged housing affixed to a keychain, used for the purpose of escaping from a car in an emergency."

As to manufacturing efficiencies, there was little evidence in the record, but it supported a finding that  the overall configuration of the GLASS-BREAKING/SEAT-BELT CUTTING Device is functional.

Finally, as to respondent's evidence of alternative designs, the Board first observed that, since it found the device to be "utilitarian functional" [a/k/a de jure functional - ed.] under the other Morton-Norwich factors, it need not consider the existence or acceptability of alternative designs. TrafFix, 58 USPQ2d at 1006-07; In re Becton, Dickinson, 102 USPQ2d at 1378; Valu Eng’g, 61 USPQ2d at 1427.

Second, respondent did not supply evidence or analysis showing that the competitors’ products or petitioner’s new product made of record "are equivalent in desired mechanical properties to those of Respondent’s design."

The EU ’787 Patent discloses the utilitarian advantages of the design of Respondent’s GLASS-BREAKING/SEAT-BELT CUTTING Device as shown in Respondent’s ’245 Registration. The packaging and online advertising of Respondent’s company for the Resqme product incorporating the design shown in the ’245 Registration touts the utilitarian advantages of the design. Although not totally in sync, testimony from the named inventors on the EU ’787 Patent demonstrates that the elements of Respondent’s GLASS-BREAKING/SEAT-BELT CUTTING Device in which Respondent claims rights were designed based on functional considerations as to (1) user operation of the device, and (2) ease of manufacture. Facts pertaining to the availability of alternative designs comprise a neutral factor here, in view of controlling case law and due to the dearth of relevant evidence and analysis.

And so, the Board found that "the design of Respondent’s GLASS-BREAKING/SEAT-BELT CUTTING Device, as shown in Respondent’s ’245 Registration, is functional based on utilitarian considerations."

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TTABlogger comment: Once in a while, it feels good to put on my patent attorney hat (as long as it doesn't muss my hair.). Do you think this opinion should be precedential? If so, there's a form for that [here].

Text Copyright John L. Welch 2023.

CAFC Affirms TTAB: "EVERYBODY VS. RACISM" Fails to Function as a Source Indicator for Bags, Clothing, and Public Interest Services

In a non-precedential ruling, the CAFC upheld the Board's decision [TTABlogged here] affirming a refusal to register the proposed mark EVERBODY VS. RACISM for tote bags and various clothing items, and for the services of "promoting public interest and awareness of the need for racial reconciliation and encouraging people to know their neighbor and then affect change in their own sphere of influence," finding that the phrase fails to function as a source indicator. The appellate court concluded that the Board's determination was supported by substantial evidence. In re GO & Associates, LLC, 2024 USPQ2d 616 (Fed. Cir. 2024) [re-designated as precedential, January 22, 2024].

The CAFC observed that "[i]f the nature of a proposed mark would not be perceived by consumers as identifying the source of a good or service, it is not registrable," citing TMEP § 1202.04(b) (precluding from trademark protection “informational matter,” such as slogans, terms, and phrases used by the public to convey familiar sentiments, because consumers are unlikely to “perceive the matter as a trademark or service mark for any goods and services.”). [Hmmm! The TMEP is not the law - ed.].

The court found GO’s challenge to be a mere disagreement with the weight the Board assigned to the conflicting evidence. But the Board "properly considered both GO’s uses and third-party uses when assessing how the public would likely perceive the mark."

GO contested this conclusion by asserting that "[p]er se refusals based on the Informational Matter Doctrine are unconstitutional" because they "involve[] content-based discrimination that is not justified by either a compelling or substantial government interest." GO Br. at 8–9 (quoting In re Elster, 26 F.4th 1328, 1331 (Fed. Cir. 2022), cert. granted sub nom. Vidal v. Elster, 143 S. Ct. 2579 (2023)). The court found this argument meritless. It pointed out that in Elster there was no issue as to whether the proposed mark TRUMP TOO SMALL functioned as a source identifier.

What is more, however, is that GO’s constitutional argument is based on a faulty premise: that the Patent and Trademark Office’s (“PTO”) application of the so-called “Informational Matter Doctrine” results in the per se refusal of any mark that contains informational matter, regardless whether or not consumers perceive the mark as source identifying. That is not true. Indeed, one can immediately envision many marks, such as GO’s own example, MAKE AMERICA GREAT AGAIN, that contain informational matter (e.g., widely used slogans), but nevertheless function as source-identifiers.

The court agreed with the TTAB that "[i] If the PTO were to allow the registration of marks that are used by the public in such a way that they cannot be attributed to a single source, the purpose of trademark law would be undermined to the detriment of the public who would be no longer free to express common sentiments without the threat of 'paying a licensing fee to someone who sees an opportunity to co-opt a political message.'"

In sum, "nothing in the Lanham Act prohibits registration of a mark containing informational matter, so long as the mark also functions to identify a single commercial source. Because EVERYBODY VS RACISM fails to meet that requirement," the court rejected GO's constitutional challenge.

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TTABlogger comment: The Board's opinion is worth reading.

Text Copyright John L. Welch 2023.

And the INTA President's Award Goes to . . . Guess Who?

Well, this was an amazing surprise. My thanks to INTA for this award. It is truly an honor to join the distinguished roster of past recipients.

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Text Copyright John L. Welch 2023.

TTABlog Test: How Well Do You Know Your TTAB Precedents?

Certain case names are associated with certain TTAB issues. See if you can match the case names listed below with the issue that each addressses. [Answers provided in first comment.]

	Case Name		Issue
1	Benthin	A	2(a) deceptiveness
2	Budge	B	excusable neglect
3	Converse	C	2(a) false connection
4	DuPont	D	2(e)(2)
5	Stone Lion	E	2(e)(3)
6	Morton-Norwich	F	2(d)
7	Newbridge Cutlery	G	2(f)
8	Notre Dame	H	consumer sophistication
9	Pioneer	I	2(e)(4)
10	Spirits Int'l	J	2(e)(5)

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TTABlogger comment: If you put the case name in the TTABlog search engine, you will find references to the cases.

Text Copyright John L. Welch 2023.

Cancellation Attack on THE EDUCATION LAWYERS Flunks Genericness and Mere Descriptiveness Tests

The Board denied a petition for cancellation of a registration for the mark THE EDUCATION LAWYERS for "legal services" [LAWYERS disclaimed] finding that Petitioner Montgomery Law failed to prove either genericness or mere descriptiveness by a preponderance of the evidence. Respondent Jacobson & John obtained its registration under Section 2(f) based only upon a declaration of at least five years of continuous and substantially exclusive use prior to making the statement. Montgomery Law LLC v. Jacobson & John LLP, Cancellation No. 92073600 (November 9, 2023) [not precedential] (Opinion by Judge Wendy Boldt Cohen).

Mere Descriptiveness: In order to assess the evidence of mere descriptiveness, the Board must first "make an express finding regarding the degree of the mark’s descriptiveness on the scale ranging from generic to merely descriptive, and it must explain how its assessment of the evidentiary record reflects that finding."

Montgomery Law did not submit any direct evidence of consumer perception in the form of consumer testimony or a consumer survey. After failing to timely submit three witness declaration and to properly submit dictionary definitions, Montgomery's only evidence of record consisted of materials from the file of Respondent’s Registration and printouts from the Internet with no accompanying testimony.

The specimens in the file history  of the challenged registration, without testimony, are not evidence of how Respondent used the mark. Montgomery did not submit any third-party applications or registrations. The Internet pages themselves cannot be used to prove the truth of the matter asserted thereon (hearsay). They are admissible to show that the public has been exposed to the term and to show the meaning of the mark.

"Although this evidence supports at least some public exposure of 'education law' and education lawyers' to refer to type of lawyer or area of legal practice, the quantity of evidence is small." Without testimony or evidence regarding the duration, geographical scope, and number of views, "their probative value is quite limited." "In sum, the record hardly evidences widespread use of THE EDUCATION LAWYERS in the legal field."

Considering all the evidence, and bearing in mind the presumed validity of Respondent’s registered mark, the limited record in this case that “education lawyers” has been used descriptively does not support the conclusion that the mark is highly descriptive. Nor does it support a finding that Respondent’s use has not been “substantially exclusive.” Petitioner has not met its burden to “establish a prima facie case of no acquired distinctiveness.”

Genericness: As usual, the Board found the genus at issue to be the recitation of services in the challenged registration. The relevant public comprises ordinary consumers who use legal services and ranges broadly from ordinary consumers to small and large businesses to other types of private and public entities. The critical issue, of course, is public perception. 

[T]he only evidence of record are Petitioner’s Notice of Reliance and various Internet printouts, albeit with no accompanying testimony. While the test for genericness is different from the test for descriptiveness, on this sparse record and given the limitations on the probative value of that evidence discussed at length above, we are unable to conclude that the evidence shows that Respondent’s
Registration is generic.

Conclusion:And so, the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: What might Montgomery Law do next? How could it bolster the feeble record?

Text Copyright John L. Welch 2023.

J. Michael Keyes: "Getting Your Teflon Survey to 'Stick' at the TTAB"

Mike Keyes, a consumer survey expert and IP litigator at Dorsey & Whitney LLP, has granted me permission to post this recent article from his newsletter, "Lanham Act Surveys for Lawyers" (subscribe here).

Getting Your Teflon Survey to "Stick" at the TTAB

Teflon. When most people hear that word, they may think of their favorite coated frying pan that dutifully keeps those scrambled eggs from being a jumbled-up, sticky mess on Saturday mornings. When trademark trial lawyers and their experts hear it, though, (regardless of the day), we think of...consumer surveys.

That's because "Teflon" is the name for a specific type of survey method used to test for whether a trademark is "generic" in the marketplace. Teflon surveys are often times at play before the TTAB. A couple of recent decisions provide a cautionary tale for those looking to get their Teflon surveys to stick with the Board. We discuss those below, but first, a paragraph (or two) of history for context.

Back in the 1930s, a scientist from the DuPont Company accidentally stumbled upon something grand: polytetrafluoroethylene, a waxy, slippery substance. DuPont coined the term "Teflon" for this magical discovery that would go on to help millions of people the world over get out of countless sticky situations. In the 1970s, another company started using "Eflon" as the name for one of its zipper products under the theory "Teflon" had become a generic term for non-stick substances. DuPont disagreed. It sued. It also presented survey evidence to show that consumers recognized Teflon as a brand name. See E. I. DuPont de Nemours & Co. v. Yoshida Int'l, Inc., 393 F. Supp. 502 (E.D.N.Y. 1975). Thus, the "Teflon" survey method was born.

One of the hallmarks of the Teflon method is that it provides a "mini" primer and quiz to the survey respondents. The survey instrument typically first explains the difference between a "brand" name (e.g., Chevrolet) and a "common" name (e.g., car). Then, respondents are given a short quiz to see if they understand the difference. Those that pass are then exposed to various brand and common names (including the mark at-issue) and are asked to classify each one. The results will either be used to show that the mark at-issue functions as a source identifier, or not.

That brings us to this week's discussion of two recent TTAB decisions involving Teflon studies. Both of them shared a similar "mini-test" flaw in the eyes of the Board, so we are sticking them together here. See In re Benjamin & Bros., LLC, 2023 TTAB LEXIS 419 (Trademark Trial & App. Bd. September 26, 2023), and In re Sensory Path Inc., 2023 TTAB LEXIS 201 (Trademark Trial & App. Bd. May 31, 2023).

In Benjamin & Bros., applicant sought to register the term "reservations.com" for various travel related services (yes, shades of booking.com). The examiner refused, finding reservations.com was generic. To overcome the refusal, applicant presented the results of its Teflon survey and argued that nearly 60% of the respondents found reservations.com to be a brand name as opposed to a common name. The Board expressed reservations about the "mini-test" administered to the respondents because "only two of the six names used to educate survey participants on the difference between common and brand names were '.com' names, and neither term in the mini test used to test participants' understanding of the difference between a common name and brand name was a '.com' name." In re Benjamin & Bros., 2023 TTAB LEXIS 419, *35.

The Board concluded that:

"The failure to educate and screen survey participants about whether they understood the difference between a generic domain name and a domain name that functions as a brand was a critical omission radically skewing the results of the survey in applicant's favor." Id. at *35-36 (emphasis supplied)(internal citations omitted).

In the next decision, applicant sought to introduce the results of a Teflon survey that purported to show that the applied-for mark--"The Sensory Path"--was not generic. But the survey did not actually provide a mini-test at all. Instead, the survey instrument simply provided a description of what the difference was between a "generic" term, a descriptive mark, and a suggestive mark. After the explanation, respondents were asked to classify various terms into one of those three categories.

The Board sensed a problem:

"Because the survey did not perform a mini-test to determine whether survey participants understand or can identify a trademark, we cannot determine whether participants even perceived the intended nature or purpose of the applied-for mark." In re Sensory Path Inc., 2023 TTAB LEXIS 201, *29-30 (internal citations omitted).

The Teflon Takeaways: If you are designing a Teflon study, be mindful of the "mini-test" administered to survey respondents. If you are testing a purported ".com" mark, the Board will want to see the mini-test include examples of ".com" domains that are brand names and common names, respectively. And, remember, it is not sufficient in a Teflon study to simply explain the difference between a common name and a brand name. Instead, a mini-test should be administrated to ensure survey respondents understand the difference and that your explanation has "stuck."

Read comments and post your comment here.

Text Copyright Michael Keyes 2023.

TTABlog Test: TTAB Rules in Three Recently Argued Ex Parte Appeals

Here are three recent decision by the Board in ex parte appeals in which it held oral arguments in September and October 2023. How do you think they came out? Answers in first comment.

In re Stonemaier LLC, Serial No. 90731004 (November 8, 2023) [not precedential] (Opinion by Judge Jennifer L. Elgin) [Section 2(d) refusal to register the mark WINGSPAN for strategy games, including board games and electronic games, in view of the identical mark registered for "toy action figures and accessories for use therewith; toy vehicles and accessories for use therewith."]

In re Panini America, LLC, Serial No. 88927178 (Sepember 29, 2023) [not precedential] (Opinion by Judge George C. Pologeorgis) [Refusal to register CERTIFIED as a trademark for "Collectible trading cards; Sports trading cards" on the ground of genericness.]

In re Total Vision Group LLC, Serial No. 90687823 and 90689458 (September 19, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman) [Refusals to register RETYZ, in standard character and design form, for "cable ties, not of metal and zip ties, not of metal," the former on the ground of mere descriptiveness and the latter on the ground of failure to disclaim "retyz."]

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2023.

TTAB Issues Protective Order Excluding Petitioner's Executive Director from Taking or Attending the Depositions of Two Witnesses, Due to Past Harassment

[Caveat: Yours Truly represents Respondent in this proceeding]. In what appears to be a case of first impression at the TTAB, the Board granted a motion for a protective order excluding Professor Eben Moglen (Columbia Law School), petitioner's executive director, from taking or attending the discovery depositions of two witnesses, due to past harassment. "Respondent's evidence indicates the likely harm to Mr. Kuhn and Ms. Sandler should Mr. Moglen be present at their depositions, let alone take their depositions. This would present significant prejudice to Respondent's ability to defend the cancellation." Software Freedom Law Center v. Software Freedom Conservancy, Cancellation No. 92066968 (November 8, 2023) [not precedential].

Respondent Conservancy submitted evidence that Mr. Moglen, inter alia, screamed at and berated Mr. Kuhn, shared personal information about Mr. Kuhn with third parties, "[m]ade evocative comments in a public setting, which Mr. Kuhn believes was intended to refer to the murder of Mr. Kuhn's mother," called him a "psycho" and he and Ms. Sandler "clowns," yelled at and threatened Ms. Sandler numerous times, and berated Ms. Sandler from the audience while she sat on a conference panel. Conservancy also submitted a declaration from Mr. Kuhn's therapist regarding the likely harm to Mr. Kuhn that would result from Moglen's attendance and participation at the depositions.

Mr. Moglen argued, in part, that he should not be disqualified from taking the depositions because:

[T]heir testimony is they are afraid. Let them call their frailties and troubles what they like, they are no basis for interfering with our, SFLC’s, right to be represented by the counsel of our choice.

After decades spent law professing, I guess there are quite a few people who, imagining me cross-examining them, would feel afraid. Their subjective moods do not constitute a basis for limiting my state-granted right to practice law.

Under FRCP 26(c)(1)(E), the Board may "for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense, including . . . designating the persons who may be present while the discovery is conducted." "'Good cause' . . . may include barring individuals from attending a deposition in order to prevent intimidation of the witness."

In making this determination, the Board "may balance the deposing party’s significant interest in conducting discovery in preparation for trial in the manner of its choosing against the harm the individual’s attendance at the depositions will cause the witnesses."

Weighing against the potential harm to respondent was "Petitioner's argument that Mr. Moglen has 'a good knowledge of the background and the record' and as an employee of Petitioner, is 'inexpensive.'" The Board found that these facts are not entitled to significant weight.

Petitioner is ably represented by outside counsel, and could send any corporate representative other than Mr. Moglen to assist. Even assuming that Mr. Moglen possesses unique information relating to the claim and defenses pending before the Board (which he has not asserted), Petitioner has not demonstrated that its outside counsel is unable to take the depositions without real-time assistance from Mr. Moglen. As to the added expense of using outside counsel, the Board routinely requires parties representing themselves pro se to retain counsel to obtain access to discovery, even if this results in additional costs.

Finally, the Board observed that if petitioner's counsel finds that he cannot complete the depositions without input from Mr. Moglen, petitioner may seek available remedies: e.g., suspending the depositions and/or filing a motion for additional time, to allow counsel to confer with Mr. Moglen. See Fed. R. Civ. P. 30(d)(1); see also TBMP § 404.06(c). "On the other hand, the potential psychological harm to Respondent’s witnesses cannot be ameliorated by any Board order."

The proceeding remains suspended in light of a pending petition to the Director concerning another discovery issue.

Read comments and post your comment here.

TTABlogger comment: Mr. Moglen did not file an appearance in the case. The Board noted that "it is quite uncertain whether he could represent Petitioner as counsel. See Trademark Rule 11.307, 37 C.F.R. § 11.307 ('A practitioner shall not act as advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness' except in limited circumstances); see also TBMP §513.02 and authorities cited therein."

Text Copyright John L. Welch 2023.

Which of These Three Section 2(d) Refusals Was/Were Reversed?

Here are three recent appeals from Section 2(d) refusals. At least one of the refusals was reversed. How do you think these came out? Answers will be found in the first comment.

In re Total Tax Experience, LLC, Serial No. 90502524 (November 6, 2023) [not precedential] (Opinion by Judge Karen S. Kuhlke). [Section 2(d) refusal of THE TAX COP for "a series of printed books, printed articles, printed handouts and printed worksheets in the field of tax planning, tax strategy, and tax relief; Printed workbooks directed to tax planning, tax strategy, and tax relief; Printed worksheets in the field of tax planning, tax strategy, and tax relief [TAX disclaimed]," in view of the registered mark COPS & Design (shown below) for "printed sheets or booklets."]

In re Pump Haircare Pty Ltd, Serial No. 79311831 (November 2, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman) [Section 2(d) refusal of PUMP HAIRCARE, for various non-medicated hair care products and for related retail services [HAIRCARE disclaimed], in view of the registered mark PUMP POWDER for "hair care preparations; hair styling preparations" [POWDER disclaimed].]

In re Cookies and Dreams A Series LLC, Serial No. 90500102 (November 1, 2023) [not precedential] (Opinion by Judge Marc A. Thurmon) [Section 2(d) refusal to register COOKIES & DREAMS for "cookies" [COOKIES disclaimed], in view of the registered mark COOKIES N’ DREAMS for “coffee; coffee beans; coffee pods; coffee pods, filled; ground coffee beans; roasted coffee beans."]

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2023.

TTABlog Celebrates 19th Anniversary!

When I started this blog in 2004, I never dreamed it would still be going strong (more or less) nineteen years later. Eighteen maybe, but not nineteen. The TTABlog debuted on November 8, 2004, with a post entitled "Leo Stoller Loses Again." (here). Remember him? Here we are, over 5,300 blog posts and 15,000 "tweets" later. Thank you all for reading!

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Text Copyright John L. Welch 2023.

Metal Jeans, Inc. opposed an application to register the mark METAL HEADS for headwear, claiming likelihood of confusion with its registered mark METAL for" ski jackets, jackets, jeans and shirts.” Third-party registrations covering both headwear and one or more of opposer's goods, along with applicant's admissions, established the relatedness of the goods. Applicant also admitted that the trade channels and classes of consumers overlap. Opposer contended that the marks are nearly identical in sight, sound, and meaning because applicant’s mark commences with the word “metal.” Applicant submitted 72 live registrations for third-party marks incorporating the word METAL for clothing, in an effort to show the weakness of opposer's mark. How do you think this came out? Metal Jeans, Inc. v. Destroyer Promotional Products, LLC, Opposition No. 91252176 (November 1,2023) [not precedential] (Opinion by Judge Angela Lykos).

In light of the third-party registrations for METAL-containing marks for clothing, the Board found that "the scope of protection of Opposer’s registered mark METAL falls on the more limited end of the spectrum, meaning that the sixth DuPont factor weighs against finding a likelihood of confusion."

Applicant had admitted (by failing to respond to admission requests) that the marks are "similar," but that was not enough to allow the Board of find that the first DuPont factor weighs in favor of a likelihood of confusion. "This is because the request did not ask Applicant to admit to each component of the analysis as set forth under DuPont (appearance, sound, connotation and commercial impression). While we agree that Applicant has conceded that the marks are 'similar,' this concession is only the beginning of our analysis. Two marks can be 'similar' in some respects but quite different in others."

The Board disagreed with opposer’s contention that consumers are likely to focus on the first word METAL in Applicant’s mark. "There is no mechanical test to select the dominant element of a mark."

Applicant’s mark METAL HEADS is well-recognized unitary term with a very different meaning from the singular term METAL. Three different dictionaries define the noun 'metalhead' as 'a fan or performer of heavy metal.' The fact that this term appears in multiple dictionary entries reflects that it is firmly entrenched in the U.S. English language lexicon. The combination of the individual words “metal” and “heads” in Applicant’s mark creates a unique commercial impression that is very different from the meanings or connotations of each individual word. 'Metalhead' (and its plural noun form) is so well recognized by consumers that the two words 'metal' and 'head' cannot be regarded as separable.

The meaning of applicant's mark "stands in contrast to the dictionary definition of 'metal' as 'any of the various opaque, fusible, ductile, and typically lustrous substances that are good conductors of electricity and heat, form cations by loss of electrons, and yield basic oxides and hydroxides; especially: one that is a chemical element as distinguished from an alloy." In short, "the marks have their own unique connotations that project separate meanings and distinct commercial impressions."

The Board concluded that consumers will readily distinguish Applicant’s mark METAL from Opposer’s unitary mark METAL HEADS, and so the first DuPont factor weighed against a finding of likelihood of confusion.

The relatedness of the goods was established by more than 50 use-based third-party registrations listing either ski jackets, snowboard jackets, jeans and shirts, on the one hand, and headwear on the other. Moreover, applicant’s admissions established that some of applicant’s and opposer’s goods are complementary. Applicant’s admissions also established that the parties’ trade channels and classes of consumers overlap.

Applicant argued that because it is a wholesaler, it caters to a sophisticated, knowledgeable consumer base. However, the identifications of goods in the application and registration contain no specified price point, nor is applicant’s identification limited to wholesalers and opposer’s limited to retailers. 

We cannot assume, as Applicant urges, that these items are rendered to different classes of buyers in different marketing contexts at different prices. Rather, we must assume that the types of buyers overlap to include wholesale and retail purchasers, expert skiers and snowboarders seeking high performance jackets who carefully scrutinizes each item before purchase, the sophisticated fashionista seeking a designer look as well as the less informed bargain hunter or novice skier and snowboarder. 

Focusing on the least sophisticated potential customers, the general public, the Board found that the fourth DuPont factor weighed in favor of a finding of likely confusion. The remaining DuPont factors were deemed neutral.

Balancing the relevant DuPont factors, the Board found confusion unlikely, and so it dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: Hat tip to applicant's counsel, Rex Brabson.

Text Copyright John L. Welch 2023.

Precedential No. 31: De Minimis Sales of Amplifiers Over Six-Year Period Leads to Cancellation of "CS" Registration for Abandonment

The Board granted a petition for cancellation of a registration for the mark CS for "amplifiers," finding that Petitioner Adamson Systems proved by a preponderance of the evidence that Respondent Peavey Electronics had discontinued use of the CS mark on amplifiers, with intent not to resume use. Peavey's de minimis domestic sales of amplifiers under the CS mark between 2016 and 2021 were "insufficient to constitute bona fide use of that mark in the ordinary course of trade," and there was no evidence "showing any intention to resume use of the mark, much less evidence excusing Respondent’s extended period of nonuse." Adamson Systems Engineering, Inc. v. Peavey Electronics Corporation, 2023 USPQ2d 1293 (TTAB 2023) [precedential] (Opinion by Judge David K. Heasley)

Under the Lanham Act, there are two elements to a claim of abandonment for nonuse: (1) use of the mark has been discontinued, (2) with intent not to resume use. A mark registered on the Principal Register is presumed to be valid (Section 7(b)), and therefore “the burden of persuasion in a cancellation proceeding rests on the party seeking to cancel the registration." A party must overcome the registration’s presumption of validity by a preponderance of the evidence. Under Section 45, if a petitioner can show three consecutive years of nonuse, it establishes a prima facie showing of abandonment, creating a rebuttable presumption that use of the mark was discontinued with intent not to resume use.

"The term 'use in commerce' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark." Lanham Act, Section 45. Prior to passage of the Trademark Law Revision Act (TLRA) in 1988, "token sales and sporadic, casual, and nominal shipments of goods bearing a mark were insufficient to avoid a prima facie finding of abandonment."

“The pre-TLRA cases remain instructive because if a use does not meet the old pre-1989 ‘token use’ standard, then it certainly will not rise to the higher level of ‘use’” set forth in the TLRA. 3 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 19:111 (5th ed. Sept. 2023).

"[L]ooking at the evidence as a whole, as if each piece were part of a puzzle to be fitted together," the Board found that Peavey's use of the CS mark was "sporadic, casual, and nominal" from 2016 through 2021, and "would not even meet the lower, pre-TLRA standard of use in commerce, much less the current higher standard of bona fide use made in the ordinary course of trade."

[The] evidence indicates that there was bona fide domestic use of the CS mark on amplifiers in the ordinary course of trade from 2012 through 2015. In the 2012-2015 period, Respondent’s domestic sales, measured in dollar amounts, were in the five-to-six figure range annually. But after 2013, when Respondent last advertised the CS amps in its domestic catalogs, domestic sales plummeted, rapidly dwindling to single digits and then zero at some points in the critical 2016-2021 time frame.

Peavey argued that "[a] mark is only abandoned when all trademark significance, including residual good will, is lost.” The Board was unmoved. Referring to the statutory definition of abandonment in Section 45, the Board observed that "[t]he second part of the statute provides that a mark shall be deemed to be abandoned" when the mark "lose[s] its significance as a mark." However, the first part of the definition "speaks not to remembrance of things past, but to use. Under its terms, a mark may be deemed abandoned '(1) [w]hen its use has been discontinued with intent not to resume such use.'" (emphasis by the Board).

Furthermore, the re-sale of branded amplifiers did not qualify as use of the CS mark because such use does not inure to Peavey's benefit. "Similarly, the repair and refurbishment of Respondent’s CS amplifiers does not maintain its rights in the mark, as neither the repair shops nor the parts bear the brand."

With regard to intent to resume use, Peavey's CEO testified that "[W]e fully intended and intend to come out with, you know, new technology using -- you know, for the CS product as well and evolve it," but Peavey was unable to provide contemporaneous documentation of those purported plans. The Board observed that "[t]he probative value of the witness’s testimony is significantly undermined by his utter lack of detail."

In sum, the Board found the record "devoid of evidence showing any intention to resume use of the mark, much less evidence excusing Respondent’s extended period of nonuse."

And so, the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: A primer on the law of abandonment.

Text Copyright John L. Welch 2023.

Precedential No. 30: TTAB Grants Motion for Leave to Take Foreign Discovery Depositions by Videoconference

In this consolidated opposition proceeding concerning likelihood of confusion and dilution of the mark INSTAGRAM, the Board granted Instagram's motion for leave to take the discovery depositions of two Australia-based officers of Instagoods by oral examination via videoconference. Instagoods refused to consent to the request, but the Board found that Instagram established "good cause" under Rule 2.120(c)(1). Instagram, LLC v. Instagoods Pty Ltd and Instagoods Pty Ltd v. Instagram, LLC, 2023 USPQ2d 1185 (TTAB 2023) [precedential] (Ashlyn Lembree, Interlocutory Attorney).

Pursuant to Rule 2.120(c)(1), the discovery deposition of a natural person (an officer, director, managing agent, or designee of a party) residing in a foreign country, if taken in a foreign country, must be taken upon written questions "unless the Trademark Trial and Appeal Board, upon motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate."

In deciding such a motion, the Board weighs the equities, including the advantages of an oral deposition and any financial hardship that the party to be deposed might suffer if the deposition were taken orally in the foreign country.

The Board found good cause for taking the deposition orally. The two witnesses are the sole remaining party witnesses with knowledge regarding issues pertinent to the claims in this proceeding. Moreover, oral depositions "are likely to aid in the furtherance of discovery in this proceeding, particularly where Instagram has had difficulty obtaining information regarding (former Instagoods employee) Ms. Willis’ role with Instagoods and her prior-filed applications through written discovery." Furthermore, "[t]he fact that the oral discovery depositions may be conducted without the need for translations and Instagram’s willingness to coordinate the depositions according to the schedules of the witnesses further supports a finding of good cause."

Turning to Instagram’s request that the discovery depositions be taken via videoconference, the Board found that method appropriate.

Rule 30(b)(4) of the Federal Rules of Civil Procedure provides that depositions may be taken “by telephone or other remote means,” and “[n]othing in the language of Rule 30 requires a showing of necessity, financial inability or other hardship to obtain an order to proceed via [remote means], and leave to take depositions [via remote means] should be liberally granted in appropriate cases.”  

The Board concluded that taking the depositions by videoconference "will promote flexibility and reduce costs to the parties, particularly where the parties may elect to break up the depositions into segments to accommodate the witnesses’ schedules."

The Board pointed out, however, that Instagram is responsible for following appropriate procedures to ensure that the taking of the discovery depositions "complies with (1) any applicable procedural treaty requirements and (2) any limitations the Board may impose upon consideration of international comity in light of any local laws given consideration by the Board."

The Board noted that Instagram may resort to any of the devices available under Federal Rule of Civil Procedure 28(b)(1), including noticing the deposition, seeking issuance by the Board of a letter of request for use under the Hague Convention, seeking issuance by the Board or, if applicable, a U.S. District Court of a letter rogatory for application to the U.S. Department of State for diplomatic processing, or seeking the appointment of an individual or officer within the foreign territory who is commissioned to take the oath of the deponent.

Read comments and post your comment here.

TTABlogger comment: Instagram argued that oral depositions "will permit immediate follow-up questions, spontaneity, and the ability to evaluate the witness’ demeanor and credibility, and that oral depositions will avoid answers to written questions that are carefully tailored by counsel." The Board did not pick up on that argument - perhaps because the Rule is the Rule - but Instagram hit the nail on the head.

Text Copyright John L. Welch 2023.